Converse Rubber Corp v Universal Rubber Products

FACTS:
Respondent Universal Rubber applied for the registration of the trademark ‘Universal Converse and
Device’ used on its rubber shoes and rubber slippers. Petitioner Converse Rubber Corporation
opposed on the ground that the trademark sought to be registered is confusingly similar to the word
‘Converse’ which is part of its corporate name ‘Converse Rubber Corporation’ and will likely deceive
purchasers and cause irreparable injury to its reputation and goodwill in the Philippines.
At the trial, petitioner's lone witness, Mrs. Carmen B. Pacquing, a duly licensed private merchant
testified that she had been selling CONVERSE rubber shoes in the local market since 1956 and that
sales of petitioner's rubber shoes in her stores averaged twelve to twenty pairs a month purchased
mostly by basketball players of local private educational institutions like Ateneo, La Salle and San
Beda.

Mrs. Pacquing, further stated that she knew petitioner's rubber shoes came from the United States
"because it says there in the trademark Converse Chuck Taylor with star red or blue and is a round
figure and made in U.S.A". In the invoices issued by her store, the rubber shoes were described as
"Converse Chuck Taylor", "Converse All Star", "All Star Converse Chuck Taylor, " or "Converse
Shoes Chuck Taylor." She also affirmed that she had no business connection with the petitioner.

Respondent, on the other hand, presented as its lone witness the secretary of said corporation who
testified that respondent has been selling on wholesale basis "Universal Converse" sandals since
1962 and "Universal Converse" rubber shoes since 1963. Invoices were submitted as evidence of
such sales. The witness also testified that she had no idea why respondent chose "Universal
Converse" as a trademark and that she was unaware of the name "Converse" prior to her
corporation's sale of "Universal Converse" rubber shoes and rubber sandals.
The Director of Patents gave due course to respondent’s application. Motion for Reconsideration was
denied.
ISSUE: Whether or not the respondent's partial appropriation of petitioner's corporate name is of such
character that it is calculated to deceive or confuse the public to the injury of the petitioner to which
the name belongs.
RULING: YES
A trade name is any individual name or surname, firm name, device or word used by manufacturers,
industrialists, merchants and others to identify their businesses, vocations or occupations." "As the
trade name refers to the business and its goodwill . . . the trademark refers to the goods." The
ownership of a trademark or tradename is a property right which the owner is entitled to protect "since
there is damage to him from confusion or reputation or goodwill in the mind of the public as well as
from confusion of goods. The modern trend is to give emphasis to the unfairness of the acts and to
classify and treat the issue as fraud.
From a cursory appreciation of the petitioner's corporate name "CONVERSE RUBBER
CORPORATION,' it is evident that the word "CONVERSE" is the dominant word which identifies
petitioner from other corporations engaged in similar business. Respondent, in the stipulation of facts,
admitted petitioner's existence since 1946 as a duly organized foreign corporation engaged in the
manufacture of rubber shoes. This admission necessarily betrays its knowledge of the reputation and
business of petitioner even before it applied for registration of the trademark in question. Knowing,
therefore, that the word "CONVERSE" belongs to and is being used by petitioner, and is in fact the
dominant word in petitioner's corporate name, respondent has no right to appropriate the same for
use on its products which are similar to those being produced by petitioner.
The trademark of respondent “UNIVERSAL CONVERSE and DEVICE” is imprinted in a circular
manner on the side of its rubber shoes. In the same manner, the trademark of petitioner which reads
“CONVERSE CHUCK TAYLOR” is imprinted on a circular base attached to the side of its rubber
shoes.
The determinative factor in ascertaining whether or not marks are confusingly similar to each other “is
not whether the challenged mark would actually cause confusion or deception of the purchasers but
whether the use of such mark would likely cause confusion or mistake on the part of the buying
public. It would be sufficient, for purposes of the law that the similarity between the two labels is such
that there is a possibility or likelihood of the purchaser of the older brand mistaking the new brand for
it.” Even if not all the details just mentioned were identical, with the general appearance alone of the
two products, any ordinary, or even perhaps even [sic] a not too perceptive and discriminating
customer could be deceived … “
The similarity in the general appearance of respondent's trademark and that of petitioner would
evidently create a likelihood of confusion among the purchasing public.  But even assuming,
arguendo, that the trademark sought to be registered by respondent is distinctively dissimilar from
those of the petitioner, the likelihood of confusion would still subsist, not on the purchaser’s
perception of the goods but on the origins thereof. By appropriating the word “CONVERSE,”
respondent’s products are likely to be mistaken as having been produced by petitioner. “The risk of
damage is not limited to a possible confusion of goods but also includes confusion of reputation if the
public could reasonably assume that the goods of the parties originated from the same source.